Intellectual Property

The Full Federal Court in AstraZeneca AB v Apotex Pty Ltd has upheld the trial judge’s finding that AstraZeneca patents relating to its blockbuster drug CRESTOR are invalid. The key issue on appeal, and the reason the Full Court agreed to sit as an enlarged bench, related to determination of the appropriate “starting point”, if any, for assessing inventive step. G+T IP lawyers consider this issue, and some other interesting aspects of the decision. This was first published in the Australian Intellectual Property Law Bulletin (2014) 27(10) IPLB.

In Australian Competition and Consumer Commission (ACCC) v TPG Internet Pty Ltd (TPG), the High Court of Australia, by majority, found for the ACCC on its appeal against TPG for alleged contraventions of the Trade Practices Act 1974 (Cth) and, following its passage into law, the Australian Consumer Law. This was first published in Competition and Consumer Law News (2014) (30)2.

International trade mark protection strategies can be complicated and expensive, particularly, as brand owners move to take advantage of “international” registration in preference to country based registrations. Fortunately, there is a way to reduce ongoing portfolio management costs whilst retaining priority of rights as you transition your portfolio. This involves the replacement of national registrations with International Registrations registered under the Madrid Protocol international trade mark registration system.

The Full Federal Court handed down a judgment that will have significant implications for the way brand owners think about protecting their brands in Australia. The decision illustrates the weaknesses in seeking to protect brands without trade mark registrations and how even a successful claim may not result in clear protection of an unregistered brand, particularly where there is delay.

From King Kong the Musical’s animatronic ape to medical devices and dental prosthetics, 3D printing is set to transform manufacturing and design but it could also pose serious dilemmas for those seeking to protect intellectual property. This first appeared in this form in Volume 51 of the Law Society Journal (NSW, Australia), October 2013.

With the advent of the digital age, business data has become the life-blood of many, perhaps most businesses. Intellectual Property specialists Michael Williams and Michael Cooley discuss some of the strategies available to businesses for maximising their capacity to protect their valuable data and to respond to data breaches effectively.

It has technically been possible to protect trade marks with a reputation in Australia, even without use here, on the basis of “spill-over reputation” since at least Conagra Inc v McCain Foods (Aust) Pty Ltd (McCain Pizza/ McCain’s Healthy Choice case). This was first published in Internet Law Bulletin (2013) (16)5.

Considering the attributes of the ordinary or reasonable consumer when determining whether advertisements are misleading or deceptive. This was first published in Competition and Consumer Law News (2013) (28)10.

In Football Dataco Ltd v Stan James plc; Football Dataco Ltd v Sportradar GmbH, Football Dataco Ltd, which commercialises data relating to UK football matches on behalf of the English and Scottish football leagues, has succeeded in restraining the unlicensed use of that data by the German sports data provider Sportradar and one of Sportradar’s customers, the bookmaker Stan James. This was first published in the Australian Intellectual Property Law Bulletin (2013) (26)1.

The unanimous decision of the Full Court of the Federal Court in Phonographic Performance Co of Australia Ltd v Commercial Radio Australia Ltd provides some much-needed clarity on what constitutes a “broadcasting service” in the Broadcasting Services Act 1992 (Cth). This was first published in Internet Law Bulletin (2013) (16)1.

Different international markets have different price tolerances and other characteristics, and trade mark owners therefore commonly divide the world into territories to maximise return on brand investment.

The Madrid Protocol facilitates the international protection of trade marks. Trade mark owners can protect their marks in any of the countries who are members of the Protocol1 by filing a single “international” trade mark registration designating those countries, rather than filing separate trade mark applications for each country. Protection of trade marks in multiple countries via a single international trade mark registration usually significantly reduces management and renewal costs when compared to the management and renewal of individual national trade mark registrations.

New trade mark opposition procedures commencing on 15 April 2013 will substantially change the trade mark opposition system in Australia. Trade mark owners will need to take steps to prepare for these.

As the Olympic flame makes its way to the London Olympic Stadium, marketing departments all over the world are running campaigns that capitalise on the spirit and excitement of the Games. For official sponsors, this means using the Olympic symbols – the rings and torch – and the Olympic name to associate themselves with the event. But for those companies who are not willing or able to hand over the rumoured 100-million-pound fee to become official sponsors, it can mean a quagmire of legal problems.

The Full Federal Court has overturned the trial judge’s decision in the Optus TV Now case, involving a service whereby Optus customers could have TV broadcasts recorded and played back later on mobile devices (National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd [2012] FCAFC 59).

In 2006, the Trade Marks Act was amended to include a new grounds of opposition to a trade mark application where “the application was made in bad faith” under section 62A. It was thought that the new ground might cater for situations where opponents otherwise had no remedy, including deliberate misappropriation of overseas marks (where the opponent could not establish a reputation in Australia for the purposes of section 60), bad faith use of marks which were not sufficiently similar to marks in which opponents could claim rights, or bad faith use of marks for different goods/services to those of the trade mark owner.

A recent case has again demonstrated that Australian product design protection law is notoriously complex, and that designers should seek expert advice on design protection before putting a product on the market.

auDA’s Names Policy Panel has now considered the submissions from the first round of public comments and released its draft recommendations for public consultation. The closing date for submissions is Friday, 10 June 2011.

A new national business name registration system is being developed to replace the existing framework which requires business names to be registered separately in every state or territory where a business operates.

Every couple of years auDA’s Names Policy Panel (the Panel) conducts a periodic review of the policy framework underlying the allocation and use of domain names in the .au domain space. The Panel has released a Discussion Paper which is open to public comment until 21 January 2011. The Panel has also released a survey to assess user requirements in relation to the .au space. The response deadline on the survey is the same date.

In the UK, Nominet has announced that previously restricted ‘short’ domain names comprising of single and double characters (0-9 and a-z) will now be available for registration under .co.uk, .org.uk, .net.uk and .me.uk.

The .co domain was originally only for use as the country domain suffix for Colombia. On 26 April 2010 it was opened up for general use, providing an additional option for companies, particularly in view of the fact that the .com domain is now nearing saturation.

“Location” is the catchcry of the real estate industry, but a recent case shows that where a particular location is trademarked, others wishing to mention that location in their advertising must tread a fine line between legitimate descriptive use and infringing trade mark use.

auDA is seeking public comment about reactivating the second level domains conf.au and info.au and establishing the new domains blog.au and event.au. auDA is also interested in the community’s thoughts about its approach to establishing new domains in the .au space.

If your sweet tooth has you wandering the confectionary aisle in your local supermarket you have probably noticed the raft of imitation chocolate confectionary products, often manufactured under the supermarket’s “home brand” and descriptively labelled. Products such as “milk whip” (think Milky Way) and “cherry bites” (think Cherry Ripe) spring to mind.

The Australian Domain Name Administrator (auDA), which is responsible for regulating the .au domain space, is introducing an official Domain Drop List to alert the public when an expired or deleted domain name will be back on the market.

Have you ever picked up a new brand of your favourite product in the supermarket and noticed that its packaging looks suspiciously similar to that of your trusted old brand? A recent case between the producers of NutrientWater and Grassroots Enhanced Water reminds us that it is difficult to stop a little shrewd copying of packaging unless it infringes your registered rights or is likely to confuse customers.

Under Australian law, there is no constitutional guarantee of freedom of speech. Australian Courts therefore, have approached the question of parody only incidentally, as part of the application of black letter trade mark law.

On 2 November 2009, the Australian Domain Name Administrator (auDA), which is repsonsible for regulating the .au domain space, issued an invitation for proposals for new second level domains (or 2LDs) and for the re-activation of the 2LDs conf.au and info.au.

When trade mark applications are accepted anywhere in the world they are published in the relevant official journal, most of which are now available online. For a number of years, there have been a range of companies that review legitimate journals and send false invoices to trade mark owners offering to include the recently accepted or registered trade marks in fictional registers or other publications for a fee. In the past, this fee was generally around USD$1000. More recently, the fee is AUD$1450. The invoices often include your full trade mark details and look authentic.

Cybersquatters have long caused headaches for trade mark owners by registering Internet domain names containing their trade marks. Now trade mark owners will have to think about protecting their rights in a whole new forum. Facebook, the world`s largest free-access social networking site, has announced that as of tomorrow, 2:01pm (Sydney time) Saturday 13 June 2009, users will be able to obtain personalized usernames for their Facebook page in the form facebook.com/yourname, on a first-come first-served basis.

Web 2.0 has arrived in all its Facebook, MySpace and Twitter glory, bringing with it a host of opportunities for trade mark abuse, as well as a rash of articles published under awful puns. Twitter is a social networking page, by which users sum up current events in their lives in 140 character updates or `tweets`. While this might at first seem harmless, Twitter has proven a relatively fruitful arena for attack on trade mark rights through the registration of marks as Twitter usernames.